WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Prada S.A. v. Domains By Proxy, LLC / Bin G Glu, G Design

Case No. D2020-1992

1. The Parties

The Complainant is Prada S.A., Luxembourg, represented by CSC Digital Brand Services Group AB , Sweden.

The Respondent is Domains By Proxy, LLC / Bin G Glu, G Design, China.

2. The Domain Name and Registrar

The disputed domain name <pradaoutlet.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2020. On July 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 31, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 4, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 5, 2020.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 27, 2020.

The Center appointed Colin T. O'Brien as the sole panelist in this matter on September 8, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant is the owner of numerous trademark registrations for PRADA throughout the world including the United States Reg. No. 1264243, Registered January 17, 21984 and Reg. No. 14004409, Registered July 8, 1986; Canada Reg. No. TMA558042 Registered February 18, 2002; and China Reg. No. 1263052 Registered November 20, 1997.

Complainant employs nearly 14,000 people and its fashion products are sold in 70 countries worldwide through 641 directly operated stores as of December 31, 2019, and in a selected network of multi-brand stores and department stores.

Complainant uses the domain name <prada.com> to promote its products and services which had a monthly average of 1.96 million visitors from January 2020 to June 2020.

5. Parties’ Contentions

A. Complainant

Respondent added the generic, descriptive term “outlet” to Complainant’s PRADA trademark, thereby making the Disputed Domain Name confusingly similar to Complainant’s trademark. The term “outlet” refers to a place from which goods are sold or distributed. Being a well-known and premium brand, Complainant’s fashion products under the PRADA brand are sold all around the world in various outlets and stores.

Respondent is not sponsored by or affiliated with Complainant in any way. Complainant has not given Respondent permission, license or authorization to use Complainant’s trademarks in any manner, including in domain names. Respondent is not commonly known by the Disputed Domain Name, which evinces a lack of rights or legitimate interests.

The Disputed Domain Name’s website redirects Internet users to multiple third-party websites, some of which belong to Complainant’s competitors. Respondent has intentionally chosen a domain name based on a famous trademark in an effort to direct Internet uses to a parked aggregator website. At first, the website found at the Disputed Domain Name displays the message, “This will only take a moment. Please wait”, before taking users to various websites. Each time a user types in the URL a different website is displayed. Respondent can thus be seen as using the Disputed Domain Name in an attempt to profit off of the fame of Complainant’s mark and direct users to an aggregator website offering various services, some of which compete directly with Complainant.

As such, Respondent is not using the Disputed Domain Name to provide a bona fide offering of goods or services as allowed under Policy, paragraph 4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy, paragraph 4(c)(iii).

Complainant and its PRADA trademark are known internationally, with trademark registrations across numerous countries. Complainant has marketed and sold its goods and services using this trademark since 1913, which is well before Respondent’s registration of the Disputed Domain Name.

At the time of registration of the Disputed Domain Name, Respondent knew, or at least should have known, of the existence of Complainant's trademarks and that registration of domain names containing well-known trademarks constitutes bad faith per se. In addition to the numerous trademarks filed in connection with Complainant’s business prior to Respondent’s registration of the Disputed Domain Name.

Respondent is not making a bona fide offering of goods or services or legitimate noncommercial fair use of the Disputed Domain Name and has registered and used the Disputed Domain Name in bad faith as Respondent has purposefully registered a domain name that incorporates Complainant’s famous PRADA trademark along with the related term ‘outlet’, with the intent of disrupting the business of Complainant by diverting Internet users to an aggregator website. As previously stated, at first the website found at the Disputed Domain Name displays the message, “This will only take a moment. Please wait” before taking users to various websites, at least one of which offers services very similar to those offered by the Complainant and may be viewed as a competitor to Complainant. Each time a user types in the URL a different website will be displayed.

The Disputed Domain Name can only be taken as intending to cause confusion among Internet users as to the source of the Disputed Domain Name, and thus, the Disputed Domain Name must be considered as having been registered and used in bad faith pursuant to Policy, paragraph 4(b)(iv), with no good faith use possible. More specifically, where the Disputed Domain Name is comprised of the Complainant’s PRADA trademark in combination with the word “outlet”, there is no plausible good-faith reason or logic for Respondent to have registered the Disputed Domain Name.

It is more likely than not that Respondent knew of and targeted Complainant’s trademark, and Respondent should be found to have registered and used the Disputed Domain Name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant has demonstrated it owns registered trademark rights in the PRADA trademark in China and throughout the world. The addition of the dictionary term “outlet” does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Accordingly, the Disputed Domain Name is confusingly similar to a mark in which Complainant has rights.

B. Rights or Legitimate Interests

Complainant has presented a prima facie case that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; has not at any time been generally known by the Disputed Domain Name; and is not making a legitimate noncommercial of fair use of the Disputed Domain Name. Complainant has also presented prima facie evidence Respondent is using the Disputed Domain Name to direct Internet users seeking to find Complainant’s website to third party websites which sell goods that compete with Complainant.

After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

Here, Respondent has provided no evidence of any right or legitimate interest in the Disputed Domain Name.

In the absence of any evidence indicating a legitimate reason for registering the Disputed Domain Name, the Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Disputed Domain Name was registered many years after Complainant first registered and used its famous PRADA mark. The evidence provided by Complainant makes it clear Respondent undoubtedly knew of Complainant’s PRADA mark and knew that it had no rights or legitimate interests in the disputed domain name. There is no benign reason for Respondent to have registered a domain name that is virtually identical to Complainant’s famous name and mark.

Further, the use of the Disputed Domain Name by Respondent is clearly in bad faith. Paragraph 4(b)(iv) states that evidence of bad faith may include a respondent’s use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location. Complainant has submitted evidence that Respondent has used the Disputed Domain Name in order to direct users to third party websites which offer goods which compete with Complainant. The Panel has attempted to visit the website at the Disputed Domain Name but is unable to due to a virus located at <pradaoutlet.com>. Given the fame of Complainant’s PRADA mark, the obvious inference is that Respondent hoped to trick either customers or employees of Complainant to visit the website at the Disputed Domain Name to either direct a user to a competitor’s website or to place a virus on user’s computers for nefarious means. This is a textbook example of bad faith use on the part of Respondent.

The Panel finds that the only plausible basis for registering and using the Disputed Domain Name has been for illegitimate and bad faith purposes.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <pradaoutlet.com> be transferred to the Complainant.

Colin T. O'Brien
Sole Panelist
Date: October 8, 2020